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Jessica Joshua
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Fictional Characters and the Right of publicity: Policies, History, and Conflict
Jessica Joshua December 21, 2009 Entertainment Law- Fall 2009
I. Introduction to the Right of publicity
Much discussion has centered on the parameters of the right of publicity as it relates to
actors and the fictional character which they portray. The Ninth Circuit has provided the most
expansive definition of the right of publicity; however, many critics believe the court’s decisions
were ill-conceived and only added to the confusion surrounding the right of publicity. This paper
addresses the right of publicity and its origin. It then discusses the Federal Copyright Act and the
confusion it causes regarding the right of publicity. The next portion goes on to discuss different
ways in which the right of publicity could be preempted by the Federal Copyright Act. Part IV
addresses possible First Amendment issues which the publicity right could face, and the
likelihood of a publicity right claim surviving a First Amendment defense. Finally, Part V
suggests theories which could lessen the confusion around the right of publicity and create
uniformity across the nation.
II. The Right of publicity: History, Policy, and Analysis
The right of publicity originates in the right of privacy and is broadly described as the “right
of individuals, most often celebrities, to protect, control, and profit from his or her name or
likeness.”1 The Right of publicity was created in response to the growing inadequacy of privacy
law as applied to the quickly increasing commercial and economic value of celebrity status.2
William Prosser divided the right of privacy into four separate torts: 1) Intrusion upon the
1 Estate of Presley v. Russen, 513 F. Supp. 1339, 1353 (D.N.J. 1981). 2 F. Colin Kingston, TV Dads, Past and Present (last modified June 9, 1998) http:// www.suite101.com/article.cfm/television/8088.
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plaintiffs seclusion or solitude, or into private affairs; 2) Public disclosure of embarrassing
private facts about the plaintiff; 3) Publicity which places the plaintiff in a false light in the
public eye; and 4) Appropriations for the defendant’s advantage of the plaintiff’s name or
likeness.”3 In the discussion, Prosser focused on the name and appropriations category, and noted
that “extension beyond this realm was entirely possible.”4 To elaborate on the realm to which he
was referring, Prosser stated that “[I]t is not impossible that there might be appropriation of the
plaintiff's identity, as by impersonation, without the use of either his name or his likeness, and
that this would be an invasion of his right of privacy."5 He went on to say that it was not
inconceivable that there might be appropriations of the plaintiffs’ identity, as by impersonation,
without the use of either his name or likeness, and that this, too, would be an invasion of his right
of privacy.6 Clearly, the right of publicity is the evolution of Prosser’s fourth tort of the Right of
Privacy. 7 However, similar to the Federal Copyright Law, the right of publicity and its
antecedent, Prosser’s fourth sub-category, are concerned with the economic interests of the
harmed person, as opposed to the interest protected against by privacy law which is the
emotional well-being of the harmed party.8
Melville Nimmer formally proposed the idea that the foundation for a right of publicity claim
does not truly exist within the right of privacy, and it was greatly expounded upon in 1953 in
Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc.9 Nimmer posited that celebrities'
recognizable names and likeness carried a great deal of economic value when used for
3 See Restatement (Second) of Torts §§ 6521, 652A-652I cmt. a (1977); William Prosser, Privacy, 48 Cal. L. Rev. 383, 398-401 (1960) 4 Prosser, supra note 44, at 401 n.155. 5 Prosser, supra note 44, at 401 n.155. 6 Id. 7 H. Lee Hetherington, Direct Commercial Exploitation of Identity: A New Age for the Right of publicity, 17 Colum.-VLA J.L. & Arts 1,4 (1992) 8 Mark Rosler, The Right of publicity, http://www.markroesler.com/legal/rights.html (2009). 9 Haelan Labs., Inc. v. Topps Chewing Gum, Inc., 202 F.2d 866 (2d Cir. 1953).
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commercial endeavors because of the celebrity's contribution of time, money and effort to
achieve public status.10 Therefore, granting a right of publicity to these celebrities follows with
the labor principle that something of value is entitled to the fruits of its economic gain.11
Nimmer’s theory was articulated in the Haelan case when the court concluded a right of
publicity was necessary because “ many prominent persons, far from having their feelings
bruised through public exposure of their likenesses [as in a right of privacy claim], would feel
sorely deprived if they no longer received money for authorizing advertisements, popularizing
their countenances, displayed in newspapers, magazines, busses, trains and subways.” 12
The Right of publicity is based on the theory that the public's reaction to such indicia of
identity creates commercially exploitable opportunities.13 The right of publicity applies to
natural persons, including music groups, but excluding corporations, partnerships, and other
forms of business organizations.14 While the right of publicity applies to all individual, it has
most often been utilized by celebrities.15 Celebrities have relied upon this right in arguing to
courts the unfairness of allowing third parties to exploit a celebrity's name, reputation, or
accomplishments, despite the fact that she has assumed celebrity status.16 Although originally
employed only to protect a celebrity's name or likeness, the statutory and common law rights of
publicity have gradually been expanded to protect anything associated with a celebrity, from
slogans to styles of singing.17
10 Melville B. Nimmer, The Right of publicity, 19 Law & Contemp. Probs. 203, 218-23 (1954) 11 Id. 12 Haelan Labs., 202 F.2d at 868. 13 Lugosi v. Universal Pictures, 603 P.2d 425, 431 (Cal. 1979) 14 Apple Corps. Ltd. v. A.D.P.R. Inc., 843 F. Supp. 342, 348 (M.D. Tenn. 1993) 15Luther King, Jr., Center for Social Change v. American Heritage Products, Inc., 694 F.2d 674, 683 (11th Cir. 1983). 16 McFarland v. Miller, 14 F.3d 912, 922 (3d Cir. 1994) 17 See, e.g., Waits v. Frito-Lay, Inc., 978 F.2d 1093 (9th Cir. 1992) (concerning protection of style of singing); White v. Samsung Elecs. Am., Inc. (White I), 971 F.2d 1395 (9th Cir. 1992) (concerning protection of image which may have been evoked through advertisement of robot in place of Vanna White); Carson v. Here's Johnny Portable
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Those in favor of the Right of publicity offer several convincing argument in support of its
existence. First, some make the argument that the publicity right prevents those who have not
contributed to the publicity value of the celebrity’s image from being unjustly enriched.18
Second, proponents argue that the right creates a powerful incentive for actors to expend time
and resources to develop the skills or achievements necessary for public recognition. In addition,
artists who achieve celebrity status “ deserves” a property right in his identity because of the
labor he expended in making himself famous.19 Finally, the argument is made that the publicity
right should be used to fill the void that copyright law fails to distinguish between the personal
features and characteristics of the actor in his portrayal of a character and the character itself. 20
The right of publicity is governed by state law; and therefore, the degree of recognition of the
right varies significantly from one state to another.21 To date, twenty-eight states have
recognized the right, either in their case law, by statute or both.22 Being that there is no Federal
statute or definitive perspective with respect to the Right of publicity, state courts lack guidance
on the issue are often produce contradictory and confusing results.23 Because of the lack of
uniformity of state courts, the ability to forum-shop, along with the efficient ways to spread
information, national advertisers must abide by the laws of the state or circuit with the most
expansive view of the right of publicity to avoid lawsuit.24 By far, the Ninth circuit has the most
Toilets, Inc., 698 F.2d 831 (6th Cir. 1983) (concerning protection of identifiable slogan from Tonight Show); Motschenbacher v. R.J. Reynolds Tobacco Co., 498 F.2d 821 (9th Cir. 1974) (concerning protection of celebrity through his association with identifiable car); Lugosi, 603 P.2d at 425 (concerning protection of role associated with celebrity). 18 Lombardo v. Doyle, Dane & Bernbach, Inc., 396 N.Y.S.2d 661 (App. Div. 1977) 19 The Right of publicity; A Matter of Privacy, Property, or Public Domain?, 19 Nova L. Rev. 1013 (1995) 20 Lugosi v. Universal Pictures, 603 P.2d at 425, 441 (Cal. 1979) 21 Haelan Laboratories, Inc., 202 F.2d at 870. 22 Roberta Rosenthal Kwall, Fame, 73 Ind. L.J. 1, 42 (1997) 23 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 28:01[3], 28-7 to -8 (4th ed. 1999) 24 See Robinson, supra note 43, at 201-02
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liberal interpretation of the right of publicity in the nation.25 A number of decisions by the Ninth
Circuit have expanded the right of publicity to lengths not previously seen.
In the first of the Ninth Circuit’s important decisions regarding the publicity right, in Midler
v. Ford Motor Co 26, the court ruled that a celebrity’s right of publicity included protection
against using a voice imitator.27 Next, in White v. Samsung Electronics, the court greatly
expanded the scope of the publicity right by implying that any appropriation of a celebrity’s
identity, regardless of how it occurs, is sufficient for establishing a successful right of publicity
claim.28 In the White case, Samsung used a robot version of Vanna White in a series of
advertisements. The robot did not have any physical features that indicated that it was supposed
to be White, but the robot was wearing a blond wig, white gown, jewels, and was turning letters
on a game board similar to that used on the wheel of fortune show. 29White argued that this
advertisement infringed on her statutory and common-law publicity rights.30 In response, the
court held that viewed together, the robot and its accessories leave little doubt about the celebrity
the ad is meant to depict.31 The Ninth Circuit, by focusing on the robot’s setting and
environment, as well as the robot, expanded and broadened the right of publicity yet again. 32
Finally, in the Ninth Circuit’s most recent and controversial decision regarding the publicity
right, in Wendt v. Host International, Inc., the court formally acknowledged an actor’s right of
publicity, and further held that this right was not preempted by the federal copyright statue.33 In
this case, Paramount, the owner of copyrights to the television show Cheers, licensed the series
25 Wendt v. Host International, Inc. 125 F.3d 806, 806 (9th Cir. 1997), 26 Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988) 27 849 F.2d 460 (9th Cir. 1988). 28 White v. Samsung Elecs. Am., Inc., 971 F.2d 1395, (9th Cir. 1992) 29 White, 971 F.2d at 1396 30 Id. 31 Id. 32 White v. Samsung Elecs. Am., Inc., 989 F.2d 1512, 1514 (9th Cir. 1993) 33 Wendt v. Host Int'l, Inc., No. 93-56318, 93-56510, 1995 WL 115571, at *1 (9th Cir. Mar. 16, 1995).
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and its characters to Host International Inc. Host wanted to construct a chain of Cheers-themed
bars. As part of the bars, Host placed two robotic figures of that were meant to resemble “Norm”
(portrayed by George Wendt) and “Cliff” (portrayed by John Ratzenberger).34 Wendt and
Ratzenberger brought suit to enjoin the use of their robots, stating that Host was encroaching on
their publicity rights.35 The Ninth Circuit reversed a lower court’s grant of summary judgment
and supported the position that actors may claim a violation of the right of publicity if the
misappropriation identifies the actor or is “sufficiently like” the actor.36 Further, the court held
that the federal copyright statute did not preempt the actor from bringing the state claim of right
of publicity. 37By holding this, the court implied that Paramount did not have a copyright in the
show’s character independent of their on screen depiction.
Other jurisdictions have expanded the publicity rights of actors in ways similar to the Ninth
Circuit. In Cheatham v. Paisano Publications, Inc. the judge allowed an assertion of an
individual’s right of privacy action based on an appropriation of the likeness of the Plaintiff’s
derriere photographed and subsequently published in a magazine and on shirts.38 In so ruling, the
court cited Waits v. Frito-Lay, Inc., which awarded damages to recognized recording artist, Tom
Waits, for a violation of California's voice misappropriation statute because Frito-Lay utilized a
vocalist in an advertisement that sounded like Waits without his consent.39 The jury award of
$200,000 compensated for injury to Waits' peace, happiness and feelings to stand in a case
primarily involving unauthorized commercial exploitation of a celebrity's vocal identity.40 In
citing the Ninth Circuit, however, the Kentucky court's decision marks the confusion arising
34 Wendt v. Host Int'l, Inc. (Wendt II), 125 F.3d 806 (9th Cir. 1997) 35 Id. 36 Wendt, 1995 WL 115571, at *1-*2. 37 Paramount Pictures Corp. v. Wendt, 531 U.S. 811 (2000) (mem.). 38 891 F. Supp. 381, 387 (W.D. Ky. 1995) 39 Cheatham, 891 F. Supp. at 387 (citing Waits, 978 F.2d at 1098, 1101-06). 40 Waits, 978 F.2d at 1111-12.
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from a lack of a definitive perspective dating back to Haelan by holding that the plaintiff would
have a cause of action only if the distinctive fishnet design of her jeans was recognized by
friends and customers. 41
III. Copyright Protection for Fictional Characters
While the actors playing fictional characters rely on their publicity rights to control the future
use of the characters they play, the studio often relies on the federal copyright statue to control
the same fictional character. Often studios claim a copyright interest in both the film in which the
character is featured, and, although less commonly recognized, in the character itself. 42 Often
the author(s) originally own the movie or television show for copyright purposes.43 The
copyright may be easily transferred to any third party, including the studio, producers, or other
parties to which the author chooses to transfer the rights.44 On the other hand, the right of
publicity is generally considered to consist of two types of rights: the right to publicity, or to
keep one's image and likeness from being commercially exploited without permission or
contractual compensation.45 Therefore, the right of publicity is considered a personal right, and
may only be claimed by the actor whose image is being used and not a third party.46
The Copyright Act was created in order to “promote the Progress of Science and useful
Arts.”47 While this clause is stated in the United States Constitution, it is also argued that Congress has
the power to regulate copyright and trademark based on the Commerce Clause of the Constitution.48 The
Commerce Clause gives Congress the authority “to regulate commerce with foreign nations, and among
41 Cheatham, 891 F. Supp. at 387. 42 Lawrence L. Davidow, Copyright Protection for Fictional Characters: A Trademark-Based Approach to Replace Nichols, 8 Colum. J.L. & Arts 513, 514 n.3 (1984). 43 Copyright in General: www.copyrights.gov, U.S Copyright Office (2009). 44 Id. 45 Johnathan Farber, Right of publicity, http://rightofpublicity.com/brief-history-of-rop, (2000). 46 Id. 47Castle Rock Entm't, Inc. v. Carol Publ'g Group, Inc., 150 F.3d 132, 141 (2d Cir. 1998) 48 Lee A. Hollaar, An Overview of Copyright, http://digital-law-online.info/lpdi1.0/treatise4.html ( 2007)
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the several states.”49 Starting at the time of the New Deal, the courts have read that clause expansively,
saying that it gives Congress the authority to regulate virtually anything that affects interstate or foreign
commerce.50 Given today’s broad reading of the Commerce Clause, and the national and international
scope of copyright and patents, there is little need for a separate Patent and Copyright Clause.51 Many
commentators now treat the Patent and Copyright Clause as a limitation on Congress, not a grant of
authority.52 Patents and copyrights must have limited durations, even though there would be no such
restriction if Congress legislated them under the Commerce Clause.53 Others argue that any copyright or
patent law passed by Congress must be shown to “promote the Progress of Science and the useful Arts”
when they feel that copyright or patent is limiting something that they feel is worthwhile.54
The Copyright Act grants exclusive control right to the creators of “original works of
authorship” that include literary, musical, artistic, dramatic, and certain other works.55 Not
included in these works of art covered by the Copyright Act are fictional characters.56 Fictional
characters were intentionally omitted from the list of “works of authorships” in section 102 of
the Copyright Act. 57 The legislative history of the Copyright Act reveals that the legislators felt
that while
Proposals have been advanced for identifying fictional characters as copyrightable works in themselves under the bill. There are undoubtedly some characters that are developed in detail and with such breadth that they emerge as separately identifiable parts of the copyrighted works in which they appear. Others, perhaps the large majority, cannot be said to represent independent creations from the literary or pictorial works depicting them. As is equally true in the case of detailed presentations of plot, setting, or dramatic action, we believe it would be unnecessary and misleading to specify fictional characters as a separate
49 U.S. Const. art. I, sec. 8 cl. 3. 50 Lee A. Hollaar, An Overview of Copyright, http://digital-law-online.info/lpdi1.0/treatise4.html ( 2007) 51 Id. 52 Id. 53 Id. 54 U.S. Const. art. I, § 8, cl. 8 55 17 U.S.C. § 102(a) (West, 2001). 56 Richard S. Robinson, Preemption, the Right of publicity, and a New Federal Statute, 16 Cardozo Arts & Ent. L.J. 183, 185 (1990) 57 William Prosser, Privacy, 48 Cal. L. Rev. 383, 389 (1960).
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class of copyrightable works. 58
Although fictional characters are not included, most courts have found a way to give these
fictional characters copyright protection as a component of the larger copyrighted work in which
they appear.59 Some courts have even gone as far as to allow these fictional characters to be
copyrightable in their own right. 60A fictional character has three identifiable and legally
significant components: its name, its physical or visual appearance, and its physical attributes
and personality traits or “characterization.” The combination of these three elements determines
a character’s copyrightability. Copyright protection extends to original works of authorship fixed
in a tangible medium of expression.61 Fictional character are expressive, original, and may be
fixed in literary, musical, or audiovisual works, thus many fictional characters qualify for
copyright protection.
By having copyright protection on either the fictional character, or at least the film in which
the fictional character appears, the studio gains a number of rights and protections.62 First, the
copyright owner can utilize the character in any future work. 63 The right to exclusive use of the
character thus places the copyright owner in an excellent bargaining position with production
studios, manufacturing enterprises, or any potential licensee seeking to capitalize on the
character's fame.64
No publication or registration or other action in the Copyright Office is required to secure
58 Supp. Rep. of the Reg. of Copyrights on the General Revision of U.S. Copyright Law: 1965 Revision Bill, 89th Cong., 1st Sess., at 6 (1965). 59 Id. at 401. 60 Prosser, supra note 44, at 401 n.155 61 Erin Green, Superheroes: An Overview of Protecting Characters Under the Law, http://tlc.usm.maine.edu /documents/Superheroes.pdf ( 2007). 62 Copyright in General: www.copyrights.gov, U.S Copyright Office (2009). 63 Melville B. Nimmer, The Right of publicity, 19 Law & Contemp. Probs. 203, 203 (1954) 64 Id.
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copyright.65 Copyright is secured automatically when the work is created, and a work is
“created” when it is fixed in a copy or phonorecord for the first time.66 “Copies” are material
objects from which a work can be read or visually perceived either directly or with the aid of a
machine or device, such as books, manuscripts, sheet music, film, videotape, or microfilm.
67“Phonorecords” are material objects embodying fixations of sounds (excluding, by statutory
definition, motion picture soundtracks), such as cassette tapes, CDs, or vinyl disks. Thus, for
example, a song (the “work”) can be fixed in sheet music (“copies”) or in phonograph disks
(“phonorecords”), or both.68 If a work is prepared over a period of time, the part of the work that
is fixed on a particular date constitutes the created work as of that date.69
Copyright is a form of property which, like physical property, can be bought or sold,
inherited, licensed or otherwise transferred, wholly or in part.70 Accordingly, some or all of the
rights may subsequently belong to someone other than the first owner and may be shared. Under
the U.S. Copyright Act, a transfer of ownership in copyright must be memorialized in a writing
signed by the transferor.71 For that purpose, ownership in copyright includes exclusive licenses
of rights. Thus exclusive licenses, to be effective, must be granted in a written instrument signed
by the grantor.72
Second, as the holder of exclusive rights to use of the character, the copyright owner may
sue any unauthorized user for infringement.73 If the actor is found not to be an owner of a
copyright in her character, she could be sued by the studio for appearing as the character in a
65 Copyrights: The Basics, www.copyrights.gov, U.S. Copyright office (2009) 66 Id. 67 Id. 68 Id. 69 Id. 70 Copyright in General: www.uscopyrights.gov, U.S Copyright Office 71 Copyright in General: www.uscopyrights.gov, U.S Copyright Office 72 Id. 73 Melville B. Nimmer, The Right of publicity, 19 Law & Contemp. Probs. 203, 216 (1954).
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future performance.74 Finally, only the copyright owner is able to license out the name and
likeness of the character for merchandising purposes. 75
In order for a studio to prove copyright protection on one of its works, the studio must satisfy
certain criteria. Courts have asked two threshold questions when determining if motion picture
characters can ever be considered independently copyrightable subject matter under section 102.
First, whether the character is considered a "work of authorship.”76, and second, whether the
character can be fixed in a tangible medium of expression 77
With regard to the authorship requirement, some courts have found that those characters
constitute an expressive component protected by copyright “from the story in which they are
contained.” 78 According to some courts copyright is available not only for characters (often as
an expressive component part of another work), but also for the expressive component parts that
significantly aid in identifying the character.79 The court in Anderson v. Stallone found that
plaintiffs' use of characters originally from the popular boxing movie "Rocky" infringed the
copyright of those characters.80 The Stallone decision supports the notion that the complete
identity of a motion picture character--the totality of work done by screenwriters, actors,
directors, and others, constitutes an original work of authorship.81 Therefore, fictional characters
may be a class that meets the authorship requirement.
Next, the requirement of “fixation" requires that the work be reduced to a tangible form.82 It
is questionable whether a character portrayed by a live actor who is constantly moving can ever
74 Id. at 215-16. 75 Id. at 216. 76 17 U.S.C. § 102(a) (West, 2001). 77 Anderson v. Stallone, 11 U.S.P.Q.2d (BNA) 1161, 1166 (C.D. Cal. 1989). 78 New Line Cinema Corp. v. Russ Berrie & Co., Inc., 161 F. Supp. 2d 293; and New Line Cinema Corp. v. Easter Unlimited, Inc., Not Reported in F.Supp., 1989 WL 248212, E.D.N.Y.,1989. 79 Id. at 293. 80 Id. 81 See 1 Nimmer, supra note 6, § 1.01(B)(1)(c), at 1-21 to 1-23 82 Community for Creative Non-Violence v. Reid, 490 U.S. 730, 736 (1989).
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be deemed "fixed."83 unless their portrayal is captured on video or described in stage direction.
The court in Baltimore Orioles, Inc. v. Major League Baseball Players Association, however,
held that the performances of baseball players are sufficiently "fixed" in the taped telecasts of the
games for the purposes of copyright protection.84 Under this analysis, a motion picture character
could similarly be deemed "fixed" in the tape of the motion picture in which it is featured. 85
Although motion picture characters may be considered independent works of authorship,
courts must still decide which standard to employ when determining if a particular character is a
work of authorship meriting copyright protection. In the landmark case of Feist Publications v.
Rural Telephone Service, Feist had copied information from Rural’s telephone listings to include
in its own, after Rural had refused to license the information.86 Rural sued for copyright
infringement.87 The Supreme Court ruled that information contained in Rural’s phone directory
was not copyrightable, and that therefore no infringement existed.88 The court reasoned that the
Copyright Act was created to “encourage creative expression,” and that while the standard of
creativity is extremely low, that this compilation of data was not sufficient to meet that standard,
and was therefore not copyrightable.89 It was established that mere labor, if not original, was not
copyrightable.90 This inevitably means that the copyright in a factual compilation is thin.
91Notwithstanding a valid copyright, a subsequent compiler remains free to use the facts
contained in another’s publication to aid in preparing a competing work, so long as the
83 Factors v. Pro Arts, Inc., 652 F.2d 278, 289 (2d Cir. 1981) 84 805 F.2d 663, 675 (7th Cir. 1986). 85 Wendt I, 35 U.S.P.Q.2d (BNA) 1315 (9th Cir. 1995) 86 499 U.S. 340, 340 (1991). 87 Feist Publications, Inc., v. Rural Telephone Service Co., 499 U.S. 340, 340 (1991). 88 Id. 89 Id. at 345 90 Id. 91 Feist Publications, Inc., v. Rural Telephone Service Co., 499 U.S. 340, 349 (1991).
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competing work does not feature the same selection and arrangement.92 This notion has been
referred to as “thin protection.”This legal interpretation was derived from the Copyright Clause
of the United States Constitution, which grants Congress the power to "promote the Progress of
Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive
Right to their respective Writings and Discoveries." 93
One option is to employ the well-established "sufficient delineation" test, first articulated by
the Second Circuit in Nichols v. Universal Pictures Corporation, a case involving the alleged use
in defendant's motion picture of characters from plaintiff's play.94 In this case, Judge Learned
Hand held that the characters at issue were merely "stock figures," not sufficiently developed to
merit copyright protection. 95However, he offered no guidance to a court applying the "sufficient
delineation" test in the future.96 As a result, in practice the test was unworkable and confusing, a
fact Judge Hand recognized when he admitted that the "sufficient delineation" standard seemed
arbitrary.97 This confusion, however, did not prevent future courts from applying the test, which
often resulted in findings that characters were copyrightable.98 Where, however, there is minimal
character development, such as in the case of "stock" characters, courts have universally held
that the characters are not "sufficiently delineated" as to merit copyright protection.99
Clearly there are shortcomings to the sufficient delineation test when it comes to the
copyrightability of fictional characters. A new test must be formulated to address fictional
characters, specifically those portrayed by human actors. The copyrightability of literary
characters is often measured by whether the character's personality is sufficiently developed on
92 Id. 93 U.S. Const. art. I, § 8, cl. 8 94 Nichols, 45 F.2d at 121-22. 95 Id. 96 Anderson, 11 U.S.P.Q.2d at 1165 97 Nichols, 45 F.2d at 122. 98 Silverman v. CBS, Inc., 870 F.2d 40 (2d Cir. 1989) 99 Jones v. CBS, Inc., 733 F. Supp. 748, 753 (S.D.N.Y. 1990)
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paper to be considered "delineated."100 Cartoon characters, however, have been granted
protection based on their appearance alone, without any attention to issues of character
development.101 It is argued that courts should consider that motion picture characters, often
highly developed and visual, may contain elements of both literary and cartoon characters, thus
raising unique issues of copyrightability which have not been settled.102
IV. Preemption
Although many courts have assumed that the studios own the rights to fictional characters,
actors have, in many cases, attempted to fight this assumption by asserting their publicity rights,
and in some cases, have been successful. In cases in which actors attempt to assert control over
their fictional character using state statute or common law publicity rights, studios often argue
that these rights are preempted by the copyright act; and therefore, the actor should not be able to
engage in conduct reserved to the studio Studios often claim that the actors’ right of publicity
invalid because of conflict preemption, as well as equivalency preemption. Both of these
arguments are derived from the Federal Copyright Act.
The first way in which a studio may combat an actor’s claim of publicity rights is by use of
the equivalency preemption. Under section 301 of the Copyright Act, Congress established that a
state law yields to a federal copyright under the doctrine of equivalency preemption if two
requirements are met.103 The work under which the right of publicity is asserted must be fixed in
100 Nichols, 45 F.2d at 121. 101 King Features Syndicate v. Fleischer, 299 F. 533 (2d Cir. 1924) 102 Anderson, 11 U.S.P.Q.2d at 1166 103 Baltimore Orioles, Inc. v. Major League Baseball Players Ass'n, 805 F.2d 663, 674 (7th Cir. 1986).
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a tangible form and come within the subject matter of copyright.104 Also, the state –created right
must be equivalent to one of the exclusive rights granted to copyright holders under the Act. 105
When analyzing whether equivalency preemption applies to a situation, a court must first
determine whether the right of publicity claim applies to the personal or proprietary rights of
publicity of the actor.106 In the case that the right of publicity claim is based on personal rights,
the subject matter of copyright is not involved, therefore, it should not be preempted.107 If the
subject matter is a proprietary right of publicity this means the actor is attempting to gain legal or
equitable right in a copyrighted motion picture character. Thus, if the claim is based on a
propriety right of publicity, it will likely meet the first element for equivalency preemption, 108 if
the character is also fixed in a media.
Whether a character is fixed in a motion picture or television show is often not in question.
Other forms of mediums, such as theater or stand-up performances, are more questionable, but
would likely be considered fixed for the purposes of copyright laws.109 So, in the cases where the
actor’s rights of publicity claim is based on the celebrity’s image or likeness as a copyrighted
character, it is clearly proprietary in nature, and the first element of the equivalency preemption
is satisfied.110
Second, and more difficult to satisfy, the court must consider whether the state-created right
is equivalent to an exclusive right under the Copyright Act. Courts are split over what the word
104 Id. 105 Id. 106 Midler v. Ford Motor Co., 849 F.2d 460, 462 (9th Cir. 1988) 107 Id. 108 Wendt I, 35 U.S.P.Q.2d (BNA) 1315 (9th Cir. 1995) 109 Edgar v. MITE Corp., 457 U.S. 624 (1982). 110 Factors v. Pro Arts, Inc., 652 F.2d 278 (2d Cir. 1981); Bi-Rite Enters., Inc. v. Button Master, 555 F. Supp. 1188 (S.D.N.Y. 1983).
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“equivalent” means.111 A number of circuit have all addressed the definition of equivalent, and
have clarified or expanded upon the definition. In Harper &Row, Publishers, Inc. v. Nation
Enterprises, the Second Circuit determined that that equivalency test’s second should be
assessed as follows:
When a right defined by state law may be abridged by an act which, in and of itself, would infringe one of the exclusive rights [outlined in section 106 of the Copyright Act], the state law in question must be deemed preempted… Conversely, when a state law violation is predicated upon an act incorporating elements beyond more reproduction or the like, the rights involved are not equivalent and preemption will not occur. 112
The court in Harper seems to simply restate the “Copyright Defense” in the first portion
of the above quote, by saying that a state law which conflicts with the Federal Copyright Act
should be preempted.113 In the second portion of the quote, the court seems to create an
“additional element” test to determine whether the state law is equivalent to the rights granted in
the Federal Copyright Act. The court states that when the state act incorporates an additional
element beyond mere reproduction, that there is no preemption.114 It follows then that since an
actor’s right of publicity requires reproduction and then additionally commercial reproduction,
that the actor’s right of publicity claim would survive preemption. This “additional element” test
is what the Ninth Circuit used to justify not granting summary judgment to the Defendant in the
Wendt case based on preemption. 115
In contrast to the Ninth Circuit’s analysis of the “additional ” test of the second element
of equivalency preemption, in Baltimore Orioles, Inc v. Major League Baseball Players
111 Zacchini v. Scripps-Howard Broad. Co., 433 U.S. 562, 573, 576 (1977); Lugosi v. Universal Pictures, 603 P.2d 425, 441-42 (Cal. 1979) 112 723 F.2d 195, 204 (2d Cir. 1983) 113 Wendt II, 125 F.3d 806, 810 (9th Cir. 1997) 114 Id. 115 17 U.S.C. § § 106, 501; 35 U.S.P.Q.2d at 1316 (citing Waits, 978 F.2d at 1100); Brown Bag Software v. Systematic Corp., 960 F.2d 1465 (9th Cir. 1992).
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Association, the Seventh Circuit held that the baseball players’ publicity rights were equivalent
to at least one of the rights encompassed by copyright—the right to perform an audio visual
work. 116Under the Baltimore Orioles court’s analysis, an actor’s claim of publicity rights to
prevent the creation of a licensed derivative work should be preempted. 117 This holding is, of
course, in contrast to the Wendt court, which ruled that the right of publicity’s requirement of
commercial appropriation constitutes an element beyond those required in a copyright
infringement claim.
The basis for these courts referring to the “additional element” test is the legislative
history of section 301 of the Copyright Act. The legislative history suggests that both the rights
of privacy and publicity would be unaffected by preemption as long as the causes of action
contained elements that are “different in kind from copyright infringement.”118 The Seventh and
Ninth Circuits stand in contrast to one another on whether the commercial appropriation aspect
of the right of publicity constitutes an additional element.
Second, a studio can argue that the actor’s publicity rights are preempted under Section 106
of the Federal Copyright Act.119 This is referred to as conflict preemption, or the “copyright
defense.” Section 106 provides that the copyright holder has the exclusive right to make
derivative works, and the Supremacy Clause of the U.S. Constitution prohibits any state law
form restricting or conflicting with a federally-granted right. 120 If a character in a motion picture
production is copyrightable. The principle of conflict preemption should prevent a state law right
116 805 F.2d 667 (7th Cir. 1986). 117 See Baltimore Orioles, 805 F.2d at 678 n.26 118 H.R. Rep. No. 1476, 94th Cong., 2d Sess. 51, 132, reprinted in 1976 U.S.C.C.A.N. 5659, 5748. 119 17 U.S.C. § 106. 120 U.S. Const. art. VI, cl. 2.
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of publicity from interfering with the copyright holder's unfettered use of the character's image in
a derivative work.121
It is established that those studios that possess ownership of a copyrightable production, also
possess have copyright rights over that productions components.122 It follows that a studio that
possesses copyright rights of a television show, it would also have copyright ownership of any
fictional characters within that production in derivative works.123 Thus, a studio should be able to
rely on the copyright defense to prevent an actor from attempting to restrict the studio from using
his image in derivative works
V. First Amendment Concerns
Another hurdle to an actor’s successful claim of publicity rights with regard to a fictional
character may be the First Amendment. Despite the fact that the First Amendment has not been
the main focus of right of publicity analyses in courts, it is directly implicated because the right
of publicity is a communicative right.124 The law attempts to strike a balance between an
individual's right of publicity and free speech rights to permit specific uses of an individual's
identity.125
To delve into this issue fully, it is necessary to understand the interrelationship between fair
use and the first amendment. The first amendment assures that we have a right to voice our ideas,
assert conflicting views from which new thought is derived, and criticize thought and action of
121 Lugosi v. Universal Pictures, 603 P.2d 425, 449 (Cal. 1979) 122 Warner Bros., Inc. v. American Broad. Co., Inc., 720 F.2d 231, 235 (2d Cir. 1983) 123 Lugosi v. Universal Pictures, 603 P.2d 425, 449 (Cal. 1979) 124 Peter L. Felcher & Edward L. Rubin, Privacy, Publicity, and the Portrayal of Real People by the Media, 88 Yale L.J. 1577, 1577 n.2 (1979) 125 Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562 (1977).
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powerful forces in society.126 But fair use provides a means to access the information upon which
our opinions are based. Without the fair use exception to copyright, free speech would be at best,
inhibited and in some cases, eliminated altogether.127 The driving policy behind the first
amendment requires the maintenance of a balance between the rights of speech in the individual
and the need to establish a secure and orderly environment in which that speech might
flourish.128
Similarly, the constitutional grant of a limited copyright monopoly in individual creators was
developed to advance these same goals of society. The constitutional provision states that “The
Congress shall have power . . . to Promote the Progress of Science and the useful Arts, by
securing for limited Times to Authors and Inventors the exclusive Right to their respective
Writings and Discoveries.”129 The ordering of the clauses indicates the policy intent behind the
provision to ensure the advancement of societal knowledge.130 The means is to grant to authors a
limited monopoly in their work in order to provide incentive for the development of new work.
The limitation ensures the existence of a public domain. 131
The fair use doctrine, a judicial creation later encoded in the statutory language of section
107 of the Copyright Act of 1976, provides specific support for the stated constitutional goals of
the copyright clause.132 This doctrine has, since common law, supported the principal that access
to information forms the basis for free speech and participatory government and that without
126 Bielefield, Arlene, & Cheeseman, Lawrence, Technology and Copyright, http://endora wide.msu.edu /3.1/coverweb/ty/ff.html (1997). 127 Id. 128 Id. 129 U. S. Const. art. I Section 8, cl. 8. 130 Shiffrin, Steven H. & Cooper, Jesse H., The First Amendment. http://endora.wide.msu .edu/3.1/coverweb/ty/ff.html (1991). 131 Id. 132 Patterson, L. Ray, & Birch, Jr., Stanley F. (1996). Copyright and free speech rights. Journal of Intellectual Property Law, 4, 1-23.
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access to information, society's ability to progress would be hindered. 133This principal specifies
that fair use is an exception to the limited monopoly granted to authors in their work.134 The
statue states that “the fair use of a copyrighted work . . . for purposes such as criticism, comment,
news reporting, teaching, scholarship, or research is not an infringement of copyright.”135 It is the
common origin of the First Amendment and the copyright clause that makes clear the purpose of
the constitutional policies: to protect free speech rights by preventing copyright from being used
as a device of censorship, consistent with the purpose that copyright promote learning.136
One serious difficulty with relying upon First Amendment protection is the legal
unpredictability of First Amendment rules. The First Amendment provides a hierarchy of
protection under the newsworthiness exception depending upon how the individual's identity is
being used.137 The newsworthiness exception to the First Amendment is based on the belief that
free speech rights clearly transcend privacy rights when the speech concerns "newsworthy events
or matters of public interest. “138 The greatest protection is provided for news, lesser protection is
provided for entertainment and fiction and the least protection is available for advertising uses
where a portrayal of a real person's identity is used to sell a product or service. 139
First Amendment protection exists to ensure that the public is constitutionally entitled to
know about things, people and events that affect it.140 The newsworthiness exception includes
information about the real world and is generally defined to include: (1) current news items,
133 Patterson, L. Ray, & Lindberg, Stanley. The nature of copyright, http://endora.wide.msu.edu /3.1/coverweb/ty/ff.html (1991). 134 Id. 135 17 U.S.C. 107 (1982) 136 Patterson, L. Ray, & Birch, Jr., Stanley F., Copyright and free speech rights. Journal of Intellectual Property Law, 4, 1-23. (1996). 137 Lloyd Rich, Right of publicity, The Publishing Law Center, 1, 1 (2000). 138 .Stephano v. News Group Publications, Inc., 64 N.Y.2d 174, 485 N.Y.S.2d 220, 224-25, 474 N.E.2d 580 (1984) 139 Id. 140 Id.
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news that has occurred in the past and information that is not strictly news, but is still
informative; (2) media presentation on "public issues"; (3) factual, educational and historical
material; and (4) entertainment and amusement concerning interesting aspects of an individual's
identity.141 Two elements must be satisfied before a person’s identity may be used under the
newsworthiness exception. First, the unauthorized use of an individual's identity must be news
that is subject to First Amendment protection. Second, there must be a reasonable connection
between the use of the individual's identity and the news that is being conveyed.142
Regarding the first element, when there is an unauthorized use of an individual’s identity,
there must be a connection, or reasonable relationship, with the news or public interest story
subject and the individual.143 When there is a connection, the individual's property rights in the
right of publicity must yield to the First Amendment. 144To succeed on a right of publicity claim,
the person must show that the property right in his/her identity was merely used as a vehicle to
attract attention to the news or entertainment message.145 Furthermore, an individual cannot use
the right of publicity to claim a property right in his/her likeness as reflected in photographs that
were taken in a public place to illustrate a newsworthy story. 146
In Whitney v. California. Justice Brandeis in 1927 outlined the underlying goals of the First
Amendment for safeguarding free speech: the enlightenment function, the self- fulfillment
function; and the safety valve function.147 The majority of courts that have addressed First
Amendment concerns with the publicity rights have made a distinction between the use of one’s
141 Id. 142 Marr, Jeremy T., Constitutional Restraints on State Right of publicity Laws. Boston College Law Review, Vol. 44, May 2003. Available at SSRN: http://ssrn.com/abstract=410025 or doi:10.2139/ssrn.410025 143 Lloyd Rich, Right of publicity, The Publishing Law Center, 1, 1 (2000). 144 Id. 145 Id. 146 Id. 147 274 U.S. 357, 375 (1927)
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identity for purely commercial uses as opposed to uses of free speech that are protected.148 The
issue for the courts becomes balancing the interests of both parties to create a workable and fair
policy.
The Supreme Court addressed the balance between the First Amendment and the right of
publicity in Zacchini v. Scripps-Howard Broadcasting Co. 149In this case, the Court agreed with
the Plaintiff that the filming of his human cannonball performance at a fair, by a television
reporter, was considered “unlawful appropriation” of his professional property.150 The
defendants argued that the First Amendment protected their right to broadcast the performance
without compensation, but the court recognized the right of publicity as an established cause of
action with significant rational and economic underpinning.151 The court did ensure that it was
understood that the holding in this case should be narrowly interpreted to the facts of the case;
however, this case left the possibility of preemption of state publicity right law, based on First
Amendment grounds, an open issue.
Since the holding in Zacchini, courts have often held that First Amendment concerns preempt
right of publicity interests.152 Courts tend to subordinate interests protected by the right of
publicity under competing free speech interests when faced with a conflict between the two.
VI. The Possible Solutions: Federal Statues or Sliding Scale?
With the new-media technologies, choice of law issues may become crucial as the
exploitation of identity can occur easily and quickly at national levels in ambiguous jurisdictions
(e.g., the Internet); a consensus on the law would promote certainty and reduce forum
148 Midler v. Ford Motor Co., 849 F.2d 460, 462 (9th Cir. 1988) 149 433 U.S. 562 (1977) 150 Id. at 564. 151 Robinson, supra note 43, at 187-88 152 Cardtoons, L.C. v. Major League Baseball Players Ass'n, 95 F.3d 959, 976 (10th Cir. 1996)
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shopping.153 An obvious solution to the courts’ splitting regarding fictional characters and the
right of publicity would be a federal statue which provided a definitive perspective. More than
half of states recognize the right of publicity. 154Some states have enacted statues that recognize
the right, while others rely on common law for protection of their right of publicity.155 Those
states that do not explicitly recognize a right of publicity find justification for protection under
privacy laws.
Court of Appeals remain split over right of publicity issues and use various schemes to
justify and carry out the right. There are a number of cases which illustrate the unresolved
conflicts and the lack of definitive perspective on the issue.
Under a dual common law and statutory schema, the Ninth Circuit's decision in Wendt
discussed in the previous section broadened the scope of California's right of publicity law in the
context of animatronics’ reproductions of celebrity likeness.156 In contrast, under a New York
privacy statute, which does not recognize a common law right of publicity, the Southern District
of New York rejected plaintiff Astrud Gilberto's request for a right of privacy action based on
defendant's unauthorized use of her voice in an advertisement.157 Specifically, the Frito-Lay
advertisement portrayed “Miss Piggy” lip-synching Gilberto's recording of “The Girl From
Ipanema,” while gorging her face with potato chips.158 Due to the absence of a common law right
of publicity recognition in New York, the plaintiff was forced to bring what amounted to a right
of publicity claim under privacy statutes. Ultimately, the plaintiff's claim was dismissed because
153 Russell J. Frackman, Tammy C. Bloomfield, The Right of publicity: Going to the Dogs?, http://www.gseis.ucla.edu/iclp/rftb.html (1996). 154 Roberta Rosenthal Kwall, Fame, 73 Ind. L.J. 1, 42 (1997) 155 Mass. Gen. Laws Ann. ch. 214, § 3A (West 1989); 156 Wendt v. Host Int'l, Inc., 125 F.3d 806, 811 (9th Cir. 1997). 157 Oliveira v. Frito-Lay, Inc., 43 U.S.P.Q.2d (BNA) 1455, 1460 (S.D.N.Y. 1997) 158 id. at 1457.
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New York law specifically excludes voice misappropriation under their current statutory
scheme.159
These conflicting court of appeals decisions highlight the potentially endless cycle of
inconsistency in right of publicity cases that seek the guidance of a federal statute. Not only will
the inculcation of a federal statute solve copyright-based preemption questions and assist in the
resolution of First Amendment preemption concerns, it will also promote consistency and
predictability of protection, reform efforts must create the most efficient law, while at the same
time fortifying the law's weaknesses with supplemental means. The most effective reform would
take the responsibility for defining publicity rights away from the hands of the inconsistent state
courts and place it in the hands of Congress so that a uniform federal law can be passed.160
Congress is best able to delineate clearly what the right of publicity in audiovisual characters
should encompass, making negotiations for the parties easier and more predictable.
In the interest of creating uniformity among court decisions, Congress should enact a
federal statute dealing explicitly with the right of publicity. Celebrities' livelihood is dependent
upon the protection of their public persona.161 Moreover, the morass of laws upon which one
may seek protection may encourage practices such as forum shopping and waste of public and
judicial resources.162 Without a workable federal statute that accounts for the ephemeral,
chameleon, and continually evolving nature of the technological universe, ongoing confusion
among the courts is rendered inevitable.163
159 id. at 1462 160Michael Albano, Should The Right of publicity Be Extended to the Fictional Characters Which they Portray, 90 GEOLJ 253, 290 (2001). 161 Zacchini v. Scripps-Howard Broad. Co., 433 U.S. 562, 576 (1977) 162 Robinson, supra note 43, at 201-02. 163 Jennifer Y. Choi, No Room for Cheers: Schizophrenic Application in the Realm of Right of publicity Protection, 9 VLSELJ 121 ( 2002).
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The bedrock of a federal right-of-publicity statute should be that, in general, an actor has
no right of publicity in a character she portrays.164 Current right-of-publicity law and proposals
for reform provide actors with overexpansive rights.165 These rights not only allow actors to
collect more than their fair share of a character's worth, but they also hinder the rights of federal
copyright owners.166 Establishing a presumption that an actor retains no right of publicity in
characters she portrays will eliminate the unfairness of the current system. Such a principle also
eradicates concerns about federal preemption that plague the present scheme.167 To prevent such
a statute from being overly burdensome on actors, however, Congress should draft an
exception.168
The exception would grant an actor a federal right of publicity in a character she portrays
when she is the substantial creative force behind the character or when the character has become
so associated with the actor that they are inseparable to the public eye.169 Cases in which an actor
is the creator of her character have always been deemed worthy of right-of-publicity protection.
170To satisfy this portion of the exception, an actor must satisfy a threshold significantly higher
than merely imparting some level of creativity or originality in the character.171 Instead, an actor
must have created or co-created the character--meaning she has taken a substantial role in the
character's origins as well as made material contributions to the character's development,
personality, dialogue, and mannerisms.172 This standard may not provide the brightest of lines,
but the threshold would be high, and congressional guidelines for determining when an actor has
164 Michael Albano, Should The Right of publicity Be Extended to the Fictional Characters Which they Portray, 90 GEOLJ 253, 290 (2001). 165 Id. 166 Id. 167 Id. 168 Id. 169 Id. 170 Id. at 291. 171 Id. 172 Id.
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"created" a character would substantially limit the subjective application of the test by the
judiciary.173 Criteria would not be developed by judicial whim, but would instead be the result of
the thorough investigation and detailed findings of various congressional committees.174 Nor
would the criteria be formed based on the particular needs of an actor or copyright owner in a
specific case.175 Instead, all of the entertainment industry, actors and studios alike, would have
the ability to participate in the drafting of congressional guidelines through testimonial avenues
or lobbying efforts. This would achieve the goal of taking the inquiry from the hands of the
judiciary in order to create uniform standards.
Another suggested remedy to the haphazard application of publicity rights is the use of a
sliding scale associated with the input the actor has on creating and personalizing the character.
Right of publicity protection should be extended to any character that is “so associated with [the
actor] that [the character] becomes inseparable from the actor's own public image.”176 This
“associative value” test, as set forth in McFarland, should be applied as a sliding scale which,
pursuant a spectrum which begins with situations where the actor is incorporated into the
creation of the character, and continues to instances in which the character is independently
created by the studio.177 The spectrum or “ tiers” of protection are as follows: (1) the actor
portrays himself or herself as a character; (2) the actor creates the character; (3) the character is
based on the actor; (4) the actor plays a character with the same name, but with fictional
elements; (5) the actor plays a character with the same first name, but with fictional elements;
and (6) the actor plays a character who is dissimilar to himself or herself, but has become
173 Id. 174 Id. 175 Id. 176 Id. 177 Angela Cook, Should Right of publicity Protection Be Extended to Actors In The Characters Which They Portray, 9 DePaul-LCA J. Art & Ent. L. 309 (1999).
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associated with the character.178 The theory is that the courts should provide protection to a
character at the top tier of the spectrum without requiring a showing of association and requires a
high association level for characters in the bottom tier.179 The purpose for the progressive level
of proof of association rests in the acknowledgement that celebrities in the first tier of the
spectrum (i.e., talk show hosts), are implicitly associated with their characters as they convey
their personality into their screen personification.180 Conversely, an actor who portrays a
character in a bottom tier of the spectrum (i.e., an actor who portrays a character unique from the
actor personally) must establish that he or she has imparted some level of creativity or originality
in the character in order to elicit public recognition of the actor upon exploitation of the
character.181
The above mentioned “sliding scale” is analogous to the “thin protection” mentioned in the
Feist case. Overall, with regard to “thin protection” the Feist Court made clear that copyright
rewards originality, not effort. 182The primary objective of copyright is not to reward the labor of
authors, but "[t]o promote the Progress of Science and useful Arts.183 Similarly, the “sliding
scale” solution mentioned above rewards the amount of originality and creativity that the actor
contributes to the character in order to determine the amount of protection the actor deserves.
Celebrities can prove their associative value with their character by utilizing the fact finding
techniques which demonstrate consumer confusion in both right of publicity and trademark
infringement analyses. 184 Such evidence includes surveys, statistical data, individual accounts
178 Id. at 314. 179 Id. at 347. 180 Id. 181 Id. 182 Feist Publications, Inc. v. Rural Tel. Servs. Co., 499 U.S. 340, 391(1991). 183 Id. 184 Id.
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and expert testimony. 185 The ‘universe’ of such data should only encompass the relevant
audience, rather than drawing samples from the public at large.186 The evidence should
demonstrate that the actor has acquired a general identification with his or her character
throughout the public.187 Additionally, evidence of character merchandising that exploits the
image of the actor supports a finding that the actor is associated with the character.188 Finally, the
court must determine on a case by case basis whether, in the situation where the actor becomes
highly associated with another character after already establishing a proprietary interest in a
previously portrayed character, the public at large continues to associate the actor with the
original character.189
In light of the expanding protection provided individuals for exploitation of their personas,
the right of publicity as applied to characters should also embody this expansive view, thus
concentrating not on how the celebrity's identity was appropriated, “but whether the defendant
has done so.190” Unlike when the right of publicity was first established, “…a character is
comprised of a “name, physical appearance, attributes, mannerisms, speech and expression,
habits, attire, setting, and locale.” 191Therefore, the court must determine which of the character's
attributes are the most distinctive, consequently identifying the celebrity when used by the
defendant. 192
In the White holding, it was held that the background and location could elicit recognition of
an actor. Although many scholars dispute the White holding, critics of the decision did not claim
185 Computer Assocs. Int., Inc. v. Altai, Inc., 982 F.2d 693 (2d Cir. 1992) 186 9 DePaul-LCA J. Art & Ent. L. 309, 348 ( 1999). 187 Id. 188 Lugosi, 25 Cal. 3d at 817. 189 9 DePaul-LCA J. Art & Ent. L. 309, 348 ( 1999). 190 John R. Braatz, White v. Samsung Electronics America: The Ninth Circuit Turns a New Letter in California Right of publicity Law, 15 Pace L. Rev. 161, 195-222 (1994). 191 Dean D. Niro, Protecting Characters through Copyright Law: Paving a New Road Upon Which Literary, Graphic, and Motion Picture Characters Can All Travel, 41 DePaul L. Rev. 359 (1992). 192 White, 971 F.2d at 1399.
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that the advertisement failed to elicit public recognition of Vanna White. Some critics of the
holding argue that a defendant should not be prohibited from simply “reminding” the public of a
celebrity.193 The right of publicity's expansion beyond appropriations of an individual's name and
likeness is premised on the acknowledgment that traits other than a name or likeness may
identify, or remind, the public of a celebrity.194 Consequently, a defendant's display of a location
that is associated with a character, while not “belonging” to the actor, may in fact appropriates
his or her image.195
VII. Conclusion
In is clear that the courts are far from in agreement when it comes to the breadth of the
right of publicity and fictional characters. The Ninth Circuit, in the Wendt decision, made
decision that may, critics argue, cross constitutional boundaries. Without a uniform and workable
model of the right of publicity, court will continue to make their own erratic standards, and
Plaintiff will continue to forum-shop for the most favorable courts. While ideally, the right of
publicity would be incorporated into to Federal Copyright Act, a sliding scale similar to the one
mentioned above would provide the court with direction, as well. It is clear that until the
problems are addressed regarding the right of publicity, each court’s decision will change and
shape to rights which an actor has regarding the use of their fictional character.
193 Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988) 194 Id. 195 9 DePaul-LCA J. Art & Ent. L. 309, 348 ( 1999).
